DCT
3:25-cv-00817
Shenzhen Yima Technology Co Ltd v. Ming D&Y Inc
Key Events
Complaint
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: Shenzhen Yima Technology Co. Ltd. dba Novkin Direct (People's Republic of China)
- Defendant: Ming D&Y Inc. (Canada)
- Plaintiff’s Counsel: Ni, Wang & Massand, PLLC
- Case Identification: 3:25-cv-00817, N.D. Tex., 04/03/2025
- Venue Allegations: Plaintiff alleges venue is proper based on Defendant's substantial business in the district, including soliciting business and deriving revenue from Texas residents.
- Core Dispute: Plaintiff seeks a declaratory judgment that its LED dog collars do not infringe Defendant's patent and that the patent is unenforceable due to expiration from non-payment of maintenance fees, and further alleges tortious interference based on Defendant's enforcement activity.
- Technical Context: The technology relates to portable, flexible light-transmitting devices, such as illuminated pet collars, designed for visibility and safety.
- Key Procedural History: The central event precipitating this lawsuit is Defendant’s filing of a patent infringement complaint on the Amazon marketplace against Plaintiff's products. Plaintiff alleges this complaint was lodged in bad faith, as the patent-in-suit had allegedly expired months earlier due to Defendant's failure to pay the required 7.5-year maintenance fee, a fact Plaintiff states was later published by the USPTO.
Case Timeline
| Date | Event |
|---|---|
| 2015-02-04 | U.S. Patent No. 9,488,325 Priority Date (Filing Date) |
| 2016-11-08 | U.S. Patent No. 9,488,325 Issued |
| 2023-11-08 | 7.5-year maintenance fee window opened for '325 Patent |
| 2024-11-08 | '325 Patent allegedly expired for non-payment of fees |
| 2025-01-07 | USPTO allegedly published Notice of Expiration for '325 Patent |
| 2025-02-06 | Defendant lodged Amazon infringement complaint against Plaintiff |
| 2025-04-03 | Complaint for Declaratory Judgment Filed |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Patent No. 9,488,325 - “Light Transmission”
- Issued: November 8, 2016
The Invention Explained
- Problem Addressed: The patent describes a need for portable, flexible light-transmitting devices (e.g., safety collars, bracelets) that are inexpensive, adaptable, and provide excellent light transmission for a given amount of battery power (’325 Patent, col. 1:5-16).
- The Patented Solution: The invention proposes a device where a light-emitting diode (LED) is positioned "immediately adjacent" to, but not embedded within, a flexible light-transmitting element. This specific non-embedded arrangement is described as enabling efficient light transmission along the element's length (’325 Patent, col. 1:35-43). The electronic components—LED, battery, and switch—are contained in an "integral module" mounted within a housing, which in turn connects to the ends of the flexible element (’325 Patent, col. 1:52-61).
- Technical Importance: This design purports to offer manufacturing advantages, as the light-transmitting element can be cut to any length without affecting the pre-assembled electronic module, enhancing adaptability and reducing cost (’325 Patent, col. 1:19-23; col. 4:61-64).
Key Claims at a Glance
- The complaint asserts non-infringement of exemplary independent claim 1 (Compl. ¶47).
- The essential elements of independent claim 1 include:
- A flexible elongated light transmitting element.
- An LED and a battery.
- A positioning element that positions the LED "immediately adjacent but not embedded in" the end of the light transmitting element.
- The positioning element comprises a housing connected to the light transmitting element via "flexible thermoplastic material end caps."
- A printed circuit board (PCB) that mounts the LED, battery, and switch together in an "integral module."
- The module is mounted in the housing.
- The housing is made of "hard plastic" and has openings, including a first opening for "ingress and egress of said module."
- The complaint seeks a declaration of non-infringement for "any claims of the Patent" (Compl. ¶46).
III. The Accused Instrumentality
Product Identification
- The accused products are Plaintiff's "LED Dog Collars" sold on Amazon under the store name Novkin Direct and identified by a list of eight specific ASINs (Compl. ¶14, ¶16).
Functionality and Market Context
- The complaint describes the Accused Products as LED dog accessories that are Plaintiff's primary sales channel into the United States (Compl. ¶14, ¶17).
- The complaint alleges specific structural differences between the Accused Products and the patent's claims. It states the Accused Products utilize "rigid, built-in metal locking tabs" instead of flexible end caps to connect the housing and the light transmitting element (Compl. ¶48).
- It further alleges the Accused Products use a "split construction" for their electronics, rather than an "integrated module" (Compl. ¶49).
- Finally, the complaint alleges that the openings in the Accused Products' housing are "too small to provide for the ingress or egress of the module" (Compl. ¶50).
- No probative visual evidence provided in complaint.
IV. Analysis of Infringement Allegations
The complaint seeks a declaratory judgment of non-infringement. The following table summarizes the plaintiff's arguments for why its products do not meet the limitations of claim 1.
'325 Patent Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Non-Infringing Functionality (as described by Plaintiff) | Complaint Citation | Patent Citation |
|---|---|---|---|
| wherein said positioning element comprises a housing...operatively connected through flexible thermoplastic material end caps... | The Accused Products allegedly do not use flexible end caps, but instead utilize "rigid, built-in metal locking tabs." | ¶47, ¶48 | col. 7:4-8 |
| wherein said printed circuit board mounts said LED, battery, and switch together in an integral module, and wherein said module is mounted in said housing; | The Accused Products allegedly do not have an "integral module" and instead utilize a "split construction." | ¶47, ¶49 | col. 7:14-17 |
| said first opening providing for ingress and egress of said module. | The Accused Products allegedly have openings that are "too small to provide for the ingress or egress of the module." | ¶47, ¶50 | col. 7:19-21 |
- Identified Points of Contention:
- Scope Questions: The dispute raises the question of whether the claim term "flexible thermoplastic material end caps" can be construed to read on the accused "rigid, built-in metal locking tabs." Similarly, the definition of "integral module" will be central to determining if the accused "split construction" falls outside the claim scope.
- Technical Questions: A key factual question will be whether the openings in the Accused Products are, in fact, too small to allow for the "ingress and egress" of the electronics module, as functionally required by the claim.
V. Key Claim Terms for Construction
The Term: "flexible thermoplastic material end caps"
- Context and Importance: This term is critical because the plaintiff's primary non-infringement argument relies on its products allegedly using "rigid, built-in metal locking tabs" instead (Compl. ¶48). The outcome of the case may depend on whether "flexible" is an essential and limiting characteristic of the claimed end caps.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The patent states the end caps are "preferably" of a flexible material, which could suggest that other, non-flexible materials are also contemplated within the scope of the invention, even if not explicitly claimed (’325 Patent, col. 2:1-2).
- Evidence for a Narrower Interpretation: The claim language itself explicitly recites "flexible thermoplastic material end caps," without qualification, suggesting flexibility is a required attribute of this element (’325 Patent, col. 7:5-6). The specification further describes these caps as being made of "soft, gripping, material such as silicone, TPU or TPR" (’325 Patent, col. 5:26-28).
The Term: "integral module"
- Context and Importance: Plaintiff alleges its products use a "split construction," directly contrasting with the "integral module" required by the claim (Compl. ¶49). The definition of "integral" will determine if a multi-part electronic assembly can meet this limitation.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The complaint does not provide sufficient detail for analysis of potential broader interpretations.
- Evidence for a Narrower Interpretation: The patent repeatedly describes the module as mounting the "LED, battery, and switch together" as a single unit, which supports a narrow construction requiring a self-contained, unitary assembly (’325 Patent, col. 1:54-56; col. 7:14-16). Figure 2 shows the module (16) as a distinct, single component separate from the housing (12) and light element (11).
VI. Other Allegations
Patent Unenforceability
- The complaint's primary and potentially dispositive claim is that the ’325 Patent is unenforceable because it expired on November 8, 2024, due to Defendant's failure to pay the 7.5-year maintenance fee (Compl. ¶23, ¶35). The complaint alleges that the USPTO published a "Notice of Expiration" confirming this lapse (Compl. ¶25). This is a factual allegation of patent expiration, rather than a claim of unenforceability due to misconduct like inequitable conduct.
Tortious Interference
- The complaint brings a state law claim for tortious interference with contract and business relationship (Compl. ¶¶53-60). This claim is based on the allegation that Defendant acted in "bad faith" by knowingly lodging an infringement complaint on Amazon based on a patent it knew or should have known was expired and unenforceable (Compl. ¶54, ¶56). The alleged knowledge stems from Defendant's status as the patent owner responsible for maintenance fees and the public notice of expiration from the USPTO (Compl. ¶25, ¶32).
VII. Analyst’s Conclusion: Key Questions for the Case
This declaratory judgment action appears to hinge on three central questions, presented in order of their likely dispositive power:
- A primary question of patent status: Is U.S. Patent No. 9488325 lapsed and unenforceable due to the alleged failure to pay statutory maintenance fees? The answer to this factual question could resolve the entire patent dispute.
- A secondary question of claim scope: If the patent is found to be enforceable, can the claim term "flexible thermoplastic material end caps" be construed to cover the "rigid, built-in metal locking tabs" of the accused products? Similarly, does the accused "split construction" meet the "integral module" limitation?
- A final question of commercial tort: If the patent is indeed expired, did the Defendant's act of asserting it in an Amazon complaint, allegedly with knowledge of its status, constitute tortious interference with the Plaintiff's business, creating liability under state law?